An assignment of copyright can contain clause that lets you get it back on breach

Software developers, writers and other 'creatives' who assign copyright in their works to a publisher, agent or other reseller will welcome a recent high court decision that an assignment can provide for the copyright to re-vest in them automatically if the publisher commits serious breaches of the assignment.

Two successful songwriters assigned copyright in certain of their songs to a music publisher under a songwriting agreement, on terms the publisher would exploit the songs and pay them royalties.

Clause 18 in the songwriting agreement said that, if the publisher committed a material breach of the agreement, and failed to remedy it within 45 days of a written notification, the rights reverted to the songwriters.

The songwriters later decided to work with a different publisher in relation to other songs. Their original publisher was unhappy about this, and there were often significant delays in payment of royalties. The songwriters exercised their right under the agreement to have the publisher's accounts audited, and won a court action they brought over the issue, but the situation still did not improve. There was a second audit, which discovered accounting and payment irregularities. The songwriters' lawyers formally requested that these be remedied, but they were not. The songwriters therefore claimed that they automatically re-acquired copyright in their songs under clause 18.

Assignments of copyright have to be in writing to be effective. The publisher argued that the consequence of clause 18 was that there had to be an assignment of copyright back to the songwriters in the case of a breach. This meant there had to be a further written document - the copyright could not automatically re-assign. The court disagreed. It said that copyright could automatically revest in the original owners, provided the clause said this clearly enough. In this case, the use of words like 'forthwith' and 'revert' in clause 18 meant it did say this clearly enough.

Owners of copyright work should therefore consider including clearly worded clauses in any agreement that assigns copyright in their works, saying that copyright automatically reverts to them if there is a material breach of the agreement, a formal request to remedy it, and a failure to do so.

Case ref: Crosstown Music Company -v- Rive Droite Music Ltd and others [2009] EWHC 600 (Ch)